Green4gold.com

The timeline behind green4gold.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION Royal Victorian Inc. v. Monaco Jewelers Claim Number: FA0807001215640 PARTIES Complainant is Royal Victorian Inc. (“Complainant”), represented by Isaac Dweck, of Royal Victorian, New York, USA. Respondent is Monaco Jewelers (“Respondent”), California, USA. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <green4gold.com>, registered with Network Solutions, Inc. PANEL The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding. Judge Ralph Yachnin as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on July 16, 2008; the National Arbitration Forum received a hard copy of the Complaint on July 17, 2008. On July 16, 2008, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <green4gold.com> domain name is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy"). On July 28, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 18, 2008 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@green4gold.com by e-mail. Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default. On August 21, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin as Panelist. Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant makes the following assertions: 1. Respondent’s <green4gold.com> domain name is identical to Complainant’s GREEN4GOLD mark. 2. Respondent does not have any rights or legitimate interests in the <green4gold.com> domain name. 3. Respondent registered and used the <green4gold.com> domain name in bad faith. B. Respondent failed to submit a Response in this proceeding. FINDINGS Complainant, Royal Victorian Inc., is in the business of dealing scrap, buying jewelry, precious metal services and buying and dealing diamonds. Complainant registered its GREEN4GOLD mark with the United States Patent and Trademark Office (“USPTO”) on January 29, 2008 (Reg. No. 3,375,629), which lists a first used in commerce date of June 13, 2006. Respondent previously offered to sell the disputed domain name to Complainant. Respondent, Monaco Jewelers, registered the <green4gold.com> domain name on August 2, 2006, which resolves to a website featuring identical services offered by Complainant and content taken from Complainant’s websites. DISCUSSION Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable." In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”). Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (2) Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith. Identical and/or Confusingly Similar The Panel finds that Complainant’s registration with the USPTO of its GREEN4GOLD mark does not predate the registration of the disputed domain name. However, in Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001), the panel stated that “[t]he Policy does not require that a trademark be registered by a governmental authority for such rights to exist.” Therefore, if Complainant can prove that it has established secondary meaning with its clients and customers, the Panel will find common law rights sufficient for Policy ¶ 4(a)(i). See S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that the complainant established rights in the descriptive RESTORATION GLASS mark through proof of secondary meaning associated with the mark). Complainant’s USPTO trademark registration indicates that it first used the GREEN4GOLD mark in commerce on June 13, 2006. According to Complainant, its customers and clients have come to identify the GREEN4GOLD mark in association with Complainant’s goods and services. Additionally, Complainant provided UPS receipts, business transaction proposals and advertisement proposals that demonstrate Complainant’s achievement of secondary meaning in the GREEN4GOLD mark. Based on the evidence in the record, the Panel finds that Complainant has established sufficient rights in the mark through secondary meaning, which predate the registration of the disputed domain name pursuant to Policy ¶ 4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that the complainant established rights in the descriptive RESTORATION GLASS mark through proof of secondary meaning associated with the mark); see also BroadcastAmerica.com, Inc. v. Quo, DTV2000-0001 (WIPO Oct. 4, 2000) (finding that the complainant has common law rights in BROADCASTAMERICA.COM, given extensive use of that mark to identify the complainant as the source of broadcast services over the Internet, and evidence that there is wide recognition with the BROADCASTAMERICA.COM mark among Internet users as to the source of broadcast services). The <green4gold.com> domain name fully incorporates Complainant’s GREEN4GOLD mark with the addition of the generic top-level domain “.com,” which is irrelevant in determining if the mark is identical to the disputed domain name. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant). Therefore, the Panel finds that the <green4gold.com> domain name is identical to Complainant’s GREEN4GOLD mark pursuant to Policy ¶ 4(a)(i). See Blue Sky Software Corp. v. Digital Sierra, Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name <robohelp.com> is identical to the complainant’s registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference"); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). The Panel finds that Policy ¶ 4(a)(i) has been met. Rights or Legitimate Interests Complainant must initially establish a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name to shift the burden of proof to Respondent pursuant to Policy ¶ 4(a)(ii). Respondent’s failure to respond to the Complaint furthers the presumption that Respondent has no rights or legitimate interests in the domain name. The Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii) but still chooses to evaluate all of the evidence according to Policy ¶ 4(c). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”). Complainant contends that Respondent is not commonly known by the disputed domain name based on the evidence in the record and the WHOIS contact information. In Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003), the panel found that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected. Similarly, the Panel finds that Respondent is not commonly known by the disputed domain name such that Respondent has not demonstrated rights or legitimate interests in the <green4gold.com> domain name sufficient to satisfy Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark). Moreover, Complainant contends that Respondent offered to sell the disputed domain name to Complainant and is using the resolving website to offer Respondent’s services that are in direct competition with services provided by Complainant. The panel in Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) found that the respondent was not using the domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks. Similarly, this Panel finds that Respondent’s competing use of the identical <green4gold.com> domain name does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate or fair use pursuant to Policy ¶ 4(c)(iii). See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site); see also Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (finding that the respondent's “use of the domain name (and Complainant’s mark) to sell products in competition with Complainant demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the name”); see also Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”). The Panel finds that Policy ¶ 4(a)(ii) has been met. Registration and Use in Bad Faith Complainant alleges that Respondent attempted to sell the disputed domain name to Complainant. In Bank of America Corp. v. Northwest Free Community Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003), the Panel stated that “Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).” Likewise, the Panel finds Respondent’s offer to sell the disputed domain name as evidence of bad faith registration and use in violation of Policy ¶ 4(b)(i). See Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where the respondent offered domain names for sale); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”). Furthermore, Complainant contends and the Panel finds that Respondent is attempting to commercially benefit from the identical <green4gold.com> domain name. Respondent is attempting to attract Internet users searching for Complainant to Respondent’s own website for its own gain by offering competing services. Complainant contends that Respondent is utilizing identical language and content from Complainant’s previous websites thus increasing the likelihood of confusion as to Complainant’s sponsorship of the disputed domain name. The Panel finds that Respondent is attempting to commercially gain from the disputed domain name in violation of Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site). Complainant asserts that it has had to stop advertising its own <greenforgold.com> domain name because customers are confused and mistype the disputed domain name resulting in diversion of Internet users to Respondent’s website. In Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000), the panel found that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii). Therefore, the Panel finds that Respondent is diverting Internet users from Complainant to Respondent’s competing resolving website, which constitutes evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites). The Panel finds that Policy ¶ 4(a)(iii) has been met. DECISION Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <green4gold.com> domain name be TRANSFERRED from Respondent to Complainant. Hon. Ralph Yachnin, Panelist Justice, Supreme Court, NY (Ret.) Dated: September 4, 2008 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page NATIONAL ARBITRATION FORUM

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.